Cook Paint & Varnish Co. v. Cook Chemical Co.

• Decision Date: 08 August 1949
• Docket Number: No. 4911,4911
• Citation: 85 F. Supp. 257
• Court: U.S. District Court — Western District of Missouri
• Parties: COOK PAINT & VARNISH CO. v. COOK CHEMICAL CO.

85 F. Supp. 257

COOK PAINT & VARNISH CO. v. COOK CHEMICAL CO.

No. 4911

United States District Court W. D. Missouri, W. D.

August 8, 1949.

Scott R. Timmons, Robert S. Eastin and Robert B. Caldwell (of Caldwell, Downing, Noble & Garrity), Kansas City, Mo., for plaintiff.

Gordon D. Schmidt, C. Earl Hovey, and Reed O. Gentry, Kansas City, Mo., Jack B. Robertson, St. Joseph, Mo., and Clay C. Rogers (of Mosman, Rogers, Bell, Field & Gentry), Kansas City, Mo., for defendant.

REEVES, Chief Judge.

There is no substantial controversy either upon the facts or the law of this case. Counsel on both sides with great and commendable diligence and industry have collated a vast body of the law on the synonymous subjects of Unfair Competition, Unfair Trade Practices and Infringement of Trade-Names. The task of the court is to select and apply from able briefs applicable doctrines to the facts of the case. The only issue for decision is whether, upon the undisputed facts, the defendant has been guilty of unfair trade practices by infringing the trade-name of the plaintiff, if it had in fact acquired a trade-name.

A predecessor of the plaintiff began business in the year 1913 under the corporate name of C. R. Cook Paint Company. In 1919 a new corporation was formed which took over the business of the first corporation. The second corporation was formed under the laws of Missouri; and, then, in 1927, a Delaware corporation was formed (the plaintiff in this case) and it took over, as had its predecessor, the good-will, trade-marks, etc., of its several predecessors. Throughout the existence of the plaintiff corporation or its predecessors, it has been and was engaged in the "manufacture and sale of paints, varnishes, lacquers, enamels, waxes, cleaners, polishes, floor finishes and cleaners, waterproofing compounds, soaps, linoleum finishes, thinners, synthetic resins and other related items."

In addition to the above, it distributes other products not manufactured by it. The plaintiff and its predecessors experienced a tremendous annual growth from a few hundred thousand dollars at the beginning to many millions of dollars at the time this case was tried. In fact, in 1947, its business aggregated 27 million dollars. In like manner, its advertising expense had increased from year to year until, at the time the case was tried, it approached a million dollars for one year. It has employed practically every known advertising media, such as newspapers, radio, bill boards, road signs, direct mail, etc. Its trade area includes many states, and it has several factories distributed over its trade area. It has many distributing warehouses and a large number of retail stores. It sells its product, as well as other products handled by it, to thousands of retail dealers, including many large customers.

In its advertisements it has continuously from its beginning emphasized the name "Cook,", "Cook's", and "Cook's Paints", etc. The names thus used have become identified extensively throughout its entire trade area with the above-mentioned products. Such advertising has continued from the beginning in 1913 to the present time.

The defendant (engaged in manufacturing and selling insecticides) early in the year 1946, after its incorporation in 1944, began advertising its products as "Cook-Kill", "Cook's Cert-O-Cide", "Cook's Weed Killer", etc. Defendant's income from sales ran also into large figures and its advertising expense was heavy. Prior to the employment of the name "Cook" in its advertising the defendant referred to or characterized its products as "Triple-C DDT Products," "Triple-C DDT Wonder Spray," "Triple-C DDT Wonder Powder", etc., and issued literature, such as "Free Booklet!" "How To Use Triple-C D.D.T."

A partnership was formed among Oscar T. Cook and others in the year 1941. This was followed by incorporating the defendant in 1944. Oscar T. Cook had been engaged for many years, in fact since 1904, in the business of fumigating grains, and used, for such purpose, insecticide chemicals. His operations extended over a large territory. In fact, as he testified, he used fumigants all over the United States. His activities, however, were limited to grain until DDT was compounded and then he became a distributor for this well-known insecticide. All of his advertising in relation to DDT, and all the publicity in the use of DDT came largely from the army. When the war was over DDT was very popular. During that time Mr. Cook used his grain trade acquaintance and connections for the distribution of DDT. The government released the DDT formula in 1945, and it was then that Mr. Cook became an independent distributor of DDT and, as heretofore indicated, began to advertise for himself. Such advertisement was in the manner above set out. Under an arrangement with the Commodity Credit Corporation he advertised this product under the name of "Triple-C DDT." Although the defendant was incorporated in 1944, it did not change the advertising methods until early in the year 1946. The name of "Cook" was not identified with the product known as DDT advertised by him as "Triple-C DDT." Early in 1946 the defendant procured the services of the advertising agency then...